1. "Honest Concurrent Use" must mean concurrent use by the respective parties. Use by one party is insufficient.

Summary

The opponent's opposition was based on two community trade mark registrations for the marks HARLEQUIN in respect of Classes 35, 41 and 42 and EHARLEQUIN.COM in respect of Classes 35, 38, 41 and 42. The applicant’s Class 37 was not opposed.

The applicant filed evidence in respect of use of HARLEQUIN marks relating to a shopping centre in Watford from 1990 onwards. The value of sales has been considerable over the years and the open market value of the centre was said to be £321m by 1998. Also considerable sums are spent advertising the centre. The applicant claimed no instances of confusion had occurred with the opponent’s mark. It claimed the benefit of honest concurrent use.

Under Section 5(2)(b) the Hearing Officer compared the various services listed by the opponent as being the same and/or similar to the services of the applicant and arrived at the conclusion that identical and similar services were at issue.

The Hearing Officer also compared the applicant's mark THE HARLEQUIN WATFORD and device mark with the opponent's marks HARLEQUIN and EHARLEQUIN.COM and concluded that the respective marks were visually, phonetically and conceptually similar. Overall the Hearing Officer decided that there was a likelihood of confusion and that the opponent was successful in its opposition.

In relation to the "honest concurrent use" claim the Hearing Officer noted that the opponent had filed no evidence of use of its marks. Therefore, he had no evidence of concurrent use by the two parties to consider. The applicant’s use did not therefore assist.